WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Case No. D2013-1022

1. The Parties

The Complainant is Rockwool International A/S of Hedehusene, Denmark, represented by Christina Bildsøe Møller, Denmark.

The Respondent is usrockwool.com / US Rockwool LLC, formerly US Fireproofing LLC of Killeen, Alaska, United States of America, represented by Nexsen Pruet, LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <usrockwool.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2013. On June 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that:

(a) it is the Registrar for the disputed domain name;

(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;

(c) the language of the registration agreement is English;

(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the UDRP, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2013. The Response was filed with the Center on July 5, 2013.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 15, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On July 16, 2013, the Respondent submitted an Amended Response in which it admitted all the allegations made against it in the Complaint. In subsequent correspondence, the parties both indicated they requested a decision ordering the transfer of the disputed domain name to the Complainant.

4. Factual Background

The Complainant is the owner of the registered trademark, ROCKWOOL, for insulation materials and building materials. The Complainant’s first registration dates back to 1937 in Denmark. Since that date it has secured over 4,000 registered trademarks for or based on ROCKWOOL mark around the world.

The Respondent US Rockwool LLC was formerly known as US Fireproofing LLC. It appears to have registered the disputed domain name on January 21, 2013.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks referred to above.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,
WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,
WIPO Case No. D2002-0420. This is different from the question under trademark law which can require an assessment of the composition of the trademark, the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

In undertaking that comparison, in the present circumstances it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,
WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet, Inc.,
WIPO Case No. D2001-0252.

The disputed domain name differs from many of the Complainant’s basic trademark registrations only by the addition of “US” to the registered term. In these circumstances, a notional Internet browser who was familiar with the Complainant’s trademark could very well consider, let alone wonder whether, the Respondent was the “US” or American branch or affiliate of the Complainant.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant contends that there is no relationship between it and the Respondent. The Complainant has never licensed or authorized the Respondent to use the Complainant’s trademarks. The Complainant further contends that the Respondent must have known of the Complainant’s rights before changing its name to one based on the Complainant’s trademark and has no rights or legitimate interests in the disputed domain name.

By its Amended Response, the Respondent admits and accepts all of these allegations.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

On this part of the case, the Complainant alleges that the Respondent recently changed its name and registered the disputed domain name to take advantage of the Complainant’s trademark and long-established reputation to promote the sale of the Respondent’s own products. This included use of a font and color scheme on the Respondent’s website similar to that used by the Complainant for its trademark. The Respondent’s conduct also included use of the Complainant’s videos to promote the Respondent’s products.

Once again, the Respondent admits and accepts these allegations by its Amended Response.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <usrockwool.com> be transferred to the Complainant.